Swarovski Aktiengesellschaft v. Building 19, Inc.
704 F.3d 44
1st Cir.2013Background
- Swarovski alleges Building #19 used its mark in newspaper ads to describe genuine Swarovski crystal.
- Building #19 is an off-price retailer with multiple New England stores and a history of reselling branded goods.
- In December 2011, Building #19 acquired Swarovski figurines from a salvage sale with no explicit branding restrictions.
- A December 2011 cease-and-desist and subsequent district-court filing led to a preliminary injunction partially limiting font size of the Swarovski name.
- In April 2012 Building #19 proposed a Mother's Day ad featuring a large Swarovski headline; Swarovski sought broader injunctive relief.
- The district court granted relief only to the extent that the Swarovski headline could not exceed the disclaimer’s font size, prompting appeal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion | Swarovski contends use in ad is likely to confuse as endorsement/affiliation. | Building #19 argues nominative fair use and no valid confusion finding exists. | Remanded for explicit likelihood-of-confusion findings. |
| Irreparable harm | Swarovski asserts irreparable harm to luxury reputation absent injunction. | Building #19 disputes need for irreparable-harm finding absent confusion. | Remanded for explicit irreparable-harm findings. |
| Nominative fair use application | Court should evaluate under traditional confusion standard before any nominative fair-use defense. | Proposed nominative fair-use factors should govern the analysis. | Court cautioned against conflating tests; clarified that plaintiff must show confusion first. |
Key Cases Cited
- Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1982) (eight-factor confusion test for likelihood of confusion)
- Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006) (likelihood of confusion central; eight-factor framework)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (Supreme Court 2004) (infringement requires actual likelihood of confusion; burden on plaintiff)
- Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211 (3d Cir. 2005) (nominative fair use considered as potential defense, varies by circuit)
- New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302 (9th Cir. 1992) (nominative use; identifiability and endorsement considerations)
- Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) (nominative fair use factors and applicability)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (nominative fair use doctrine discussion)
- Weikert, 504 F.3d 1 (1st Cir. 2007) (four-factor preliminary-injunction test; burden on movant)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (Supreme Court 2006) (in injunctions, traditional equity principles govern; no categorical rules)